Selecting the Expert Witness as an Arbitrator in Patent Arbitrations - Dispute Resolution Journal - Vol. 70, No. 4
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Originally from Dispute Resolution Journal
There are several reasons why arbitration could be preferable to
litigation in resolving intellectual property disputes. Many of these
advantages are purely procedural in nature, such as lower cost,
shortened length of the proceeding, and privatization of the dispute.
However, one of the greater substantive merits of arbitration lies in
the parties’ ability to select their own arbitrator.1 Such an option is
particularly relevant in the field of patent arbitration when the issue
comes down to the minute technicalities of an invention that only an
arbitrator comfortably knowledgeable in the subject matter would be
able to identify, untangle, and analyze.2 The selection of the
appropriate arbitrator could increase the accuracy and precision of the
final outcome that is ultimately rendered in the arbitration.
Not unlike many other types of arbitration, the strength of the
evidence in patent arbitrations will most likely depend on each party’s
respective witnesses. And unless the dispute is about proving the
literal fact of the infringing act, the issue presented in a patent
arbitration case will frequently go to the validity or enforceability of
the patent, as well as its scope of protection. In such cases, the parties
must be able to prove, or disprove, statutory elements of the particular
patent such as novelty, nonobviousness, and utility of the invention.
By the language of the Patent Act (Title 35 of the U.S.C.), these
factors are judged against the standard of a “person having ordinary
skill in the art.”3 It follows, then, that it is only appropriate that each
witness who testifies to such factors be an expert of the field, or a
“person having ordinary skill in the art.” But what about the person
who adjudges these arguments? The expert arbitrator, who, by his
Na Kyung Lee is a J.D. candidate of the class of 2016 at Cornell Law School.
Previously, she received a Bachelor’s degree in chemical engineering.